Firm Overview:

In China, Simmons & Simmons’ specialist trademark practice operates through a separate legal entity, eight-year-old Simmons & Simmons (Beijing) Intellectual Property Agency. The agency advises major institutions and corporations on trademark portfolio prosecution and enforcement and on complex contentious and commercial matters and is noted for “doing good work” by peers. Specialising in formulating, implementing and managing IP portfolios and enforcement of IP rights in China, the agency is part of an 11-partner firm-wide EMEA and Asia brands group that advises clients on the impact of Chinese law and works with local law firms to issue formal legal opinions when required.

Team Overview:

George Chan, a partner in the Dispute Resolution Group in China, is the founding head of the firm’s IP agency. Chan is highly regarded by peers and crafts novel legal solutions for a range of complex IP dispute resolution matters, including trademarks for renowned international companies. The team has recently been involved in oppositions and invalidations, enforcement and litigation, and licensing for, inter alia, a sporting organisation, an industrial company and a fashion brand.

Clients:

BlackBerry, Johnson & Johnson, Major League Baseball, Off-White, Lifestyles, Standard Chartered, Imperial Tobacco, Aspen Global.

Firm Overview:

Established in 2012 by ex-Baker McKenzie US lawyer and regional stalwart, Joe Simone, SIPS is an IP boutique recognised for “a good reputation in licensing” by peers. Somewhat a maverick firm, SIPS assists clients of all sizes to manage their IP portfolios in Greater China, including the registration, enforcement and licensing of trademarks. The firm’s primary focus is the PRC (85%) but a number of its clients have related interests in Hong Kong, Taiwan and Macau. SIPS also handles regional and global matters for its Asian clientele.

In 2021, SIPS merged with Shanghai-based Sinofaith IP Group, one of the largest domestic IP protection service providers, with a patent agency, an investigation division and other IP-related businesses, such as valuation, licensing management, and technology consulting. SIPS operates independently but now offers a full range of IP services to clients. The firm plans further integration and expansion with market observers interested to see the impact of recent changes, and how the ambitious firm will develop in the future.

SIPS has been active recently on managing global trademark filing programmes, a successful claim of unfair competition, a criminal IP infringement case, a counterfeit goods investigation, a trademark counterfeit case, and successful trademark oppositions and invalidations.

Team Overview:

“Dynamic character” Joe Simone is the driving force of the firm and is acknowledged for his work in trademark prosecution, although he is also now seen to be active on firm development. Fans describe Simone as an “impressive thought leader” in the area. Hong Kong and regional matters are handled by partner Helen Tang, a “go-to person” for trademark prosecution in the territory. SIPS also has team members in Los Angeles, New York, and Vancouver.

Joann Chan, partner and head of investigations and enforcement, joined in April 2022 with a team of 15 based in Shanghai/Guangzhou working with several household-name multinational clients. SIPS has a headcount of over 85 with offices in HK, Beijing, Shanghai, Guangzhou, and a new Shenzhen office and is known to be actively recruiting new partner hires.

Firm Overview:

“Good in the Greater China Region, a credible and reputable practice.” Established in 1852, Deacons is one of Hong Kong’s oldest law firms, and maintains Hong Kong’s oldest trademark, registered by Nestlé in 1874. The firm has one of the largest specialist IP teams in Hong Kong, with 13 partners, one counsel and over 110 staff. Deacons works for, and maintains long-standing client relationships among, 50 of the world’s 100 best-known and most valuable brands. For example, Deacons handles the majority of Nestlé’s trademark portfolio and registers over 50 filings for Nestlé a year.

Deacons has advised clients on China-related IP issues since China opened up for foreign direct investments in 1986. The solely-owned Deacons (Beijing) Intellectual Property Agency, founded in September 2013, files trademark applications, oppositions, and invalidations directly with the China National Intellectual Property Administration (CNIPA), and handles customs-related IP protection. Across China, Deacons operates a single partnership, offering a full range of IP services, with a main office in Hong Kong and representative offices in Beijing, Shanghai and Guangzhou. The mainland offices report vertically to service leaders in Hong Kong. 

Deacons has handled influential trademark cases in China, including matters related to trademark commercialisation or well-known trademark recognitions and administrative and infringement appeals at the Beijing IP Court and Beijing Higher People’s Court. The firm has also acted for clients in retrial proceedings before the Supreme People’s Court of China. Some of these cases are cited by the Beijing Intellectual Property Court as leading authorities.

Team Overview:

Consultant Charmaine Koo is head of IP Commercial and Litigation. Peers say: “Deacons has grown under her leadership and she does some good IP trademark cases as well”. Koo has served as chair of the International Bar Association’s Trademark Law Subcommittee. Annie Tsoi, co-head of Deacons’ IP department and head of the China IP Practice Group, manages global trademark portfolios and brand protection for a number of Hong Kong, China and international companies including China’s largest online marketplace Alibaba.

Key Matter:

• Deacons (Beijing) Intellectual Property Agency represented one of the world’s largest lighting manufacturers in managing its trademark portfolio and trademark enforcement matters, and non-contentious and commercial matters in China. This included litigations based on trademark infringement and trade name infringement from the perspective of the Anti-Unfair Competition Law.
• Tsoi advised a well-known Swiss watch brand in connection with worldwide trademark portfolio, trademark infringement, infringing domain names and cybersquatting cases.

Clients: 

Alibaba, Nestlé, Tsit Wing (Hong Kong).

Firm Overview:

The ‘East-meets-West’ approach of IP consultancy AWA provides an alternative for brands entering the Chinese market. Named after Swedish founder Anders Wilhelm Anderson, AWA Asia is part of a 20+ office Europe and Asia ‘twin offering’ to international clients and referral firms navigating an unfamiliar territory. AWA Asia’s trademark practice focuses on maximising and maintaining brand value for clients of all sizes, in sectors including food and beverage, technology, automotive and luxury companies. The Beijing office is a licensed trademark agency meaning AWA’s capabilities extend to filing and enforcement of trademarks directly before the China Trademark Office.

Team Overview:

Beijing based Ai-Leen Lim, CEO and principal counsel of AWA Asia, has “put together a phenomenal team of people who share her ethos of being very responsive and very knowledgeable”. The former Bird & Bird partner has formed deep relationships with lawyers and clients outside of China, using her “super creative problem solving” to assist on global portfolios. Lim’s international approach receives positive feedback, as one US lawyer says, “to this day she has had more wins than any Chinese counsel I’ve ever known. I can’t say enough good things”. AWA’s team includes partner Ashley Zhao, who “makes the magic happen” on both contentious and non-contentious matters for clients in food and beverage, entertainment and IT.

Key Matter:

• Ho assisted a nutrition company in an appeal to the PRC Supreme People’s Court (SPC) on trademark infringement and unfair competition actions against a Chinese entity. Clifford Chance advised the company, and parent company, on related litigation and advisory matters in Hong Kong and mainland China.